Larson v. Warner Brothers Entertainment

An agreement that revokes copyright interest from one part and re-grants the interest in another party, in order to gain a more lucrative contract for granting of the same rights, will be upheld if it does not constitute an “agreement to the contrary” of the Copyright Act.

Opinion (Wright, II): In 2001, Jerome Siegel (“Siegel”) and Joe Shuster (“Shuster”) sold the character of Superman to DC Comics (“DC”) after having revoked DC’s rights to Superman and Superboy in 1997. Siegel and Shuster argued that this agreement served as a revocation and re-grant of Siegel and Shuster’s copyright interest in all works related to Superboy and Superman, thus precluding Siegel’s estate from issuing two termination notices for such works in 2002 and 2012. Siegel’s estate countered this argument by asserting a lack of express language in the original 2001 agreement related to revocation. The court held that the 2001 agreement was binding and enforceable based on the terms embodied in that specific agreement, which encompassed all works related to Superboy and Superman. The Court explained that the 2001 agreement acted as a re-grant of Siegel’s rights in all Superman-related works in return for significant advance payments and subsequent royalties. In order for a re-granting agreement to not be held to constitute an “agreement to the contrary,” it must be used to gain a “highly remunerative” new granting of the same rights previously granted. The Court held that the 2001 agreement between Siegel’s estate and DC followed the required statutory formalities and did not constitute an “agreement to the contrary” of the Copyright Act. Accordingly, the Court GRANTED DC’s motion for summary judgment.